Trade dress is important area of intellectual property. Traditionally, trade dress is the overall appearance or image or design of a product or its packaging, which serves to signify the source of the product to the consumer. Although trade dress protection has extended beyond simple packaging and product design, it is not always clear what might constitute trade dress. One area of great importance to many businesses is whether there is protectable trade dress in their website.

In a recent case is the U.S. District Court for the Northern District of California, Ingrid & Isabel, LLC v. Baby Be Mine, addresses the increasingly relevant question of what constitutes protectable trade dress for a website. Although prior trade dress cases found that a website’s “look and feel” can constitute protectable trade dress, at least one case did so to protect the “look and feel” of a website that was, itself, the product, not merely one used to market products. In other cases, the court did not find trade dress due to the parties’ failure to specifically identify the elements of the website comprising the trade dress.

Generally speaking, trade dress refers to the elements that make up the visual appearance such that the purchasing public associates the trade dress with a single source for the goods. The courts have found protectable trade dress in the “look and feel” of everything from the color of pads used on dry cleaning equipment, to the colors and shape of a fast food restaurant. This case analyzes whether the “look and feel” of a website used to market products can constitute protectable trade dress.

In Ingrid & Isabel, LLC v. Baby Be Mine, both companies sell maternity waist bands (stretchy cotton belts that hold up the clothing for pregnant women) as well as other maternity clothing, and both companies operate a respective website. The parties were not new to litigation, and in fact Ingrid & Isabel had previously sued Baby Be Mine for patent infringement over its band design, trademark infringement based on allegations that Baby Be Mine’s “Belly Band” was confusingly similar to Ingrid & Isabel’s “Bella Band,” as well as for unfair competition. The present case alleges claims of breach of contract, and trade dress violations under the Lanham Act.

To prevail on a claim of trade dress, a party asserting trade dress must demonstrate that its trade dress is inherently distinctive; that its trade dress is non-functional; and that the defendant’s product creates a likelihood of consumer confusion.

In its Lanham Act claim, Ingrid & Isabel alleged that Baby Be Mine’s use of certain words and phrases on its website and marketing materials, and the overall “look and feel” of its website were distinctive and non-functional. Ingrid & Isabel recited specific elements contained on its website that it claims had been copied by Baby Be Mine, including cursive script used in the headers, the pale pink-orange color of the lettering, the poses of the models, photographs of models wearing white tanks with jeans, with long naturally wavy hair, where the model is featured head to mid-thigh, model photographs featuring mouse-over change of whimsical, casual poses to display all angles of the product, certain patterns on the website ‘wallpaper’ and other similarities. Ingrid & Isabel argued that the features on the Baby Be Mine site were similar enough to those specifically recited that it could lead to likelihood of confusion for consumers.

Regarding proof of its trade dress violation claim, Ingrid & Isabel offered evidence of direct copying, which courts have recognized as being relevant to a determination of secondary meaning. Further, the court recognized that many of the specific elements listed, such as the color and pattern of wallpaper, particular poses of the model, color of the script were non-functional elements. Finally, the court found that Ingrid & Isabel had created triable issues of fact with respect to the issue of likelihood of consumer confusion.

Because Ingrid & Isabel had created a triable issue of fact with respect to each element required to prove its trade dress violation claim, the court denied Baby Be Mine’s request for summary judgment. The survival of this claim provides the possibility for a finding that the “look and feel” of the Ingrid & Isabel website contains protectable trade dress. The outcome of this issue in the case may provide some guidance as to what may be required to claim trade dress in a website, and every company with a prominent web presence may be wise to pay attention to this case.

Trade dress rights are valuable intellectual property rights. If you have questions about trade dress issues, you need an experienced trademark attorney. Anna Vradenburgh is a well-respected, business-minded expert in trademark matters. For more information, visit her website, or contact Anna at (818) 488-8146. This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice.

Obtaining a federal registration for a trademark is important because it helps to protect a company’s brand. Due to the importance of receiving a federal registration, the truthfulness of the underlying application for that trademark is paramount. When filing a trademark application, an applicant must execute a declaration that attests to the truthfulness of the content of the application. This includes attesting to the fact that the trademark is being used in commerce in connection with the goods or services listed in the application. If the statements in the declaration are false, any resulting registration can be challenged on the basis of fraud. If a claim of fraud is brought by a challenger, serious consequences for the registrant can follow. Such was the case in NationStar Mortgage LLC v. Mujahid Ahmad.

In a precedential opinion, the Trademark Trial and Appeal Board (TTAB) issued a finding of fraud in the opposition matter entitled NationStar Mortgage LLC v. Mujahid Ahmad. While a finding of fraud is rare, it does happen from time to time. In the case re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir 2009), the Federal Circuit articulated the current standard for fraud in procuring a trademark registration. In the words of the Federal Circuit in Bose, “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with intent to deceive the USPTO.”

The NationStar Mortgage matter involved the attempted registration of the trademark “NATIONSTAR” for “mortgage brokerage,” “insurance brokerage,” and other real estate and mortgage related services. In April of 2005, long prior to filing the trademark application, the applicant, Mujahid Ahmad, a Virginia real estate agent, registered multiple domain names using derivations of nationstar, for example, nationstarmortgage.com and nationstar.org. On April 11 and April 18, 2006, counsel for opposer, NationStar Mortgage, sent letters to Mr. Ahmad offering to purchase two of the domains. The offer was rejected, and within a few days of the offer, Mr. Ahmad filed a use based trademark application for “NATIONSTAR” for a number of services, including real estate brokerage services and insurance brokerage services. By filing the application based on use, Mr. Ahmad declared that the mark was in use for all the identified services at the time of filing the application.

Fraud in the procurement of a trademark registration must be proven via clear and convincing evidence, and here, the facts were the applicant’s undoing. The opposer, NationStar Mortgage, alleged that Mr. Ahmad never used the NATIONSTAR MORTGAGE mark in connection with the identified services, and that he “submitted a fabricated specimen that was not used in commerce at least as early as the application filing date.” In fact, Mr. Ahmad admitted during testimony that he was not a real estate broker, not an insurance broker, nor did he offer mortgage insurance. While Mr. Ahmad claimed he was the owner of a company called NationStar Mortgage Inc. and used the name in connection with his services as a real estate agent, he also testified that he was unaware of any profits for the company and did not have a bank account. Mr. Ahmad also admitted that all of the materials submitted to the USPTO were created on his own computer, and by a third party printer; however, he could not produce records of professional printing for the supposed business cards and postcards that were sent to clients or otherwise used commercially.

The TTAB noted that it was skeptical of applicant’s testimony and claims, particularly because, although the applicant was not a lawyer with expertise in trademark law, he was a real estate agent and was familiar with the laws surrounding mortgage brokers and insurance brokers, and would have certainly been aware that he was not licensed as a broker of mortgages or insurance. The TTAB stated that just because Mr. Ahmad filed his own application, it did not afford him “a free pass to disregard the straightforward requirements of a use-based application and the solemnity of the application declaration that he signed subject to criminal penalties.”

The TTAB was also clear that the facts in this case were inconsistent with merely a mistake or misinterpretation of the law by a non-attorney applicant. In the words of the TTAB, “this record does not support a finding that applicant’s misrepresentation was occasioned by mere inadvertence or reasonable mistake or misunderstanding….While fraud will not lie if a statement, though false, was made with a reasonable and honest belief that it was true, there are limits to what may be claimed in good faith.”

In the end, the TTAB sustained NationStar’s opposition. In addition to the obvious lessons in regard to avoiding fraudulent filings, this case highlights the importance of using an experienced attorney to prepare trademark applications.

If you have questions about filing a trademark application, you need an experienced trademark attorney. Anna Vradenburgh is a well-respected, business-minded expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks. In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board. Anna can also assist your company in licensing matters, including drafting and negotiation of trademark licensing agreements. For more information, visit her website, or contact Anna at (818) 488-8146. This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice.

The U.S. government has taken a number of steps to help stop counterfeit goods from entering the United States, including maintaining the website www.stopfakes.gov, a one-stop source for information on protecting your intellectual property from counterfeit imports. Stopfakes.gov is a partnership among a number of agencies including the FBI, U.S. Customs and Border Protection, the Department of Justice, Office of the U.S. Trade Representative, and United States Patent and Trademark Office (USPTO). The website has resources for businesses, including country-specific information about stopping fakes, and resources for reporting counterfeiting activities to federal law enforcement.

One of the best ways to prevent the sale of counterfeit goods is to keep them out of the United States. Under the federal Lanham Act and the Tariff Act of 1930, the federal government, through the U.S. Customs and Border Protection (USCBP) agency, has the responsibility of protecting trade and enforcing intellectual property rights on behalf of companies.

If you believe counterfeit goods bearing your federally registered trademark are being illegally imported into the United States, there are a few quick and easy ways to alert federal law enforcement.

Record your intellectual property rights with USCBP at http://www.stopfakes.gov/business-tools/us-customs-and-border-protection-e-recordation-tool. The website allows the submission of an application for online registration of federally registered trademarks and copyrights with the USCBP. This will typically include submitting descriptions and photographs of your goods, along with samples, or summaries of the content, appearance, and look of your products, such that USCBP will be able to recognize potential fakes. The application is $190 per trademark per class of goods, or copyright, with a periodic $80 renewal fee. (Currently, USCBP only provides for the recordation of trademarks and copyrights, not patents.) As soon as you have filed the application, USCBP will be authorized to detain, seize, notify, and destroy counterfeit versions of goods bearing your trademark, or copyrighted materials.

Authorize a reliable employee, agent, or attorney to serve as the point of communications for the USCBP. This individual will be the primary point of contact with the USCBP, and should have the skill and availability to definitively identify the counterfeit goods, in person, if necessary. This agent will receive all notices from USCBP, and should be able to respond quickly, investigate the seized goods, and notify the agency with certainty about the legitimacy of the goods.

If you have questions about importing, counterfeit concerns, or would like more information on customized services to monitor and protect your company’s intellectual property, you need an attorney who understands your needs and can help you protect your rights. Anna Vradenburgh is a well-respected, business-minded attorney with expertise in trademark issues and is able to advise your company on these types of intellectual property matters. For more information, visit the Eclipse Law Group website, or contact Anna at (818)488-8146. This newsletter is for educational purposes only and nothing in this newsletter is intended to be, or should be considered to be, legal advice.